Prosecution History Estoppel in Design Patent Cases

Prosecution history estoppel (PHE) may prevent a finding of infringement when the patentee originally claims the matter alleged to infringe but then narrows the claim in response to a rejection during prosecution. PHE applies when: (1) there is a “surrender of claim scope” during the prosecution of the asserted design patent; (2) the surrender is “for reasons of patentability”; and (3) the accused design is within the scope of the surrender. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014). PHE may be based on amendment or argument.

Amendment Based – Four examples of amendment-based PHE are failure to prosecute a non-elected embodiment following a restriction requirement, amendment of the title that excludes the accused product, elimination of a design element after a new matter rejection, and a characteristic features statement.

Failure to Prosecute Unelected Embodiment – Design patents are limited to one claim. See In re Rubinfield, 270 F.2d 391, 396 (CCPA 1959). When an application includes more than one patentably distinct claim, the examiner will require the applicant to elect one embodiment to prosecute. If the applicant fails to prosecute the unelected embodiment in a divisional application, PHE may apply to the unelected and non-prosecuted embodiment when the accused product falls within the scope of the non-prosecuted embodiment. See Jenny Yoo Collection, Inc. v. Watters Design Inc., No. 16-CV-2205 (VSB), 2017 U.S. Dist. LEXIS 175399, at *28 (S.D.N.Y. Oct. 20, 2017); Victus, Ltd. v. Collezione Europa U.S.A., Inc., No. 2:97-cv-00138, 1998 U.S. Dist. LEXIS 14230, at *14-19 (M.D.N.C. Aug. 3, 1998). If the accused product falls outside the scope of the non-prosecuted embodiment, there is no PHE. See Pacific Coast Marine Windshields, supra, at 705.

Failure to prosecute an unelected embodiment does not always result in estoppel even when the accused product is substantially the same as the unelected and non-prosecuted embodiment. This can occur when the elected embodiment is a portion of the unelected embodiment and the elected embodiment (now patented) is embodied in the accused product. See Advantek Mktg. v. Shanghai Walk-Long Tools Co., 898 F.3d 1210, 1214-17 (Fed. Cir. 2018). 

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Amended Title – 37 CFR § 1.153 states in relevant part that “[t]he title of the design must designate the particular article.” A title that is too broad or that otherwise fails to designate the particular article will draw an objection or rejection from the Examiner. The amended title may create PHE, e.g., amending original title “Furniture (Part of-)” to “Pattern for a Chair” excluded baskets. See Curver Lux., SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019).

Elimination of a Design Element – PHE may be created when an applicant adds new design features during prosecution and then is required to remove them based on a new matter rejection. See Australia Vision Servs. Pty., Ltd v. Dioptics Med. Prods., Inc., 29 F. Supp. 2d 1152, 1156-59 (C.D. Cal. 1998). PHE arguments based on allegedly eliminating a design feature disclosed in the original filing have failed when there was insufficient evidence the design feature was eliminated. See Dorman Prods. v. PACCAR, Inc., 201 F. Supp. 3d 663, 681-83 (E.D. Pa. 2016); Weber-Stephen Prods. LLC v. Sears Holding Corp., No. 1:13-cv-01686, 2014 U.S. Dist. LEXIS 149144, at *32-35 (N.D. Ill. Oct. 20, 2014).

Characteristic Features Statement – A characteristic features statement describes a particular feature of the design considered by applicant to be novel or nonobvious over the prior art. Such a statement is permissible but is not required. According to MPEP 1503.01 II, it should not be suggested by an Examiner. In the past, PHE was created when an applicant complied with a Patent Office request to include a characteristic feature statement (descriptive clause) to overcome prior art. See McGrady v. Aspenglas Corp., 487 F. Supp. 859, 860-62 (S.D.N.Y. 1980).

Argument Based PHE – PHE also may be created by arguments that distinguish prior art. When an applicant makes “clear and unmistakable” statements that a design feature is a “critical element” in the overall appearance that distinguishes the claimed design from prior art, a court may find that prosecution history estoppel exists. See Nike, Inc. v. Skechers U.S.A., No. LA CV17-08509 JAK (Ex), 2020 U.S. Dist. LEXIS 257711, at *13-33 (C.D. Cal. Oct. 26, 2020)

If the argument distinguishing prior art is general in nature and does not focus on explicitly distinguishing a specific feature in the prior art, a court likely will not find PHE. For example, arguments that a claimed design as a whole is nonobvious over a prior art reference as a whole for reasons including a design feature have been held not to create PHE against accused products that include the design feature. See Design Ideas, Ltd. v. Target Corp., No. 20-cv-3231, 2021 U.S. Dist. LEXIS 243072, at *6 (C.D. Ill. Dec. 20, 2021).

Procedure – PNE is a question of law and may be decided on a motion to dismiss. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1367-68 (Fed. Cir. 2003); Jenny Yoo, supra. (dismissing claim under Rule 12(b)(6) because prosecution history estoppel barred finding that accused product infringed design patent). 

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